national arbitration forum

 

DECISION

 

Mycoskie, LLC v. afang hu / afang

Claim Number: FA1303001488484

PARTIES

Complainant is Mycoskie, LLC (“Complainant”), represented by John M. Mueller of Baker & Hostetler LLP, Ohio, USA.  Respondent is afang hu / afang (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tomsshoessalemart.info>, registered with Name.com LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 4, 2013; the National Arbitration Forum received payment on March 8, 2013.

 

On March 5, 2013, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <tomsshoessalemart.info> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name.  Name.com LLC has verified that Respondent is bound by the Name.com LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On March 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@tomsshoessalemart.info.  Also on March 8, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On April 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant owns United States Patent and Trademark Office (“USPTO”) trademark registrations for the TOMS mark for use in connection with the sale of a variety of goods, but most commonly and most prominently, men's, women's, and children's shoes.

 

Respondent operates a website addressed by the <tomsshoessalemart.info> domain name offering for sale shoes, and in particular, shoes that directly compete, and in fact, appear to be counterfeits of the shoes offered for sale by TOMS Shoes, Inc. The website may also be used to perpetuate a phishing scheme to steal and use consumers’ credit card numbers.

 

The first portion of Respondent's second level domain, “tomsshoessalemart," is identical to Complainant's federally protected TOMS mark, and the second part is merely a generic descriptor, the connotation and commercial impression thereof is identical. Accordingly, the Respondent's domain name <tomsshoessalemart.info> is confusingly similar to and infringes Complainant's trademark rights, satisfying Complainant's burden as set forth under 4(a)(i) of the Policy.

 

TOMS is the dominant portion of Respondent's domain name and courts have found that likelihood of confusion is particularly compelling when the shared component of two composite marks is dominant or strong.

 

The fact that the goods that Respondent is offering at its website, namely, shoes alleged to be legitimate TOMS shoes, which are in fact counterfeit, is further evidence of the likelihood of confusion caused by Respondent's improper activities.

 

Respondent has made no legitimate use whatsoever of the domain name <tomsshoessalemart.info> and never had any intention to do so. Respondent registered the domain name having actual knowledge of Complainant's preexisting trademark rights in the TOMS trademarks and the use of the same in connection with the sale of shoes. Accordingly, it appears that Respondent's registration of the domain name <tomsshoessalemart.info> is a willful attempt to trade on the extensive goodwill and national reputation of Complainant's TOMS trademarks.

 

The only website that Respondent has ever had located at the domain name <tomsshoessalemart.info> offers counterfeit TOMS goods.

 

Respondent is not now known by and has never used and/or traded under the name "TOMS" or "TOMSSHOESSALEMART" names (other than as described above in the manner which infringes Complainant's trademark rights). As such, there can be no doubt as to the fact that Respondent has not legitimately or fairly used the <tomsshoessalemart.info> domain name.

 

Respondent has registered the domain name <tomsshoessalemart.info> to disrupt the business of Complainant and Complainant's exclusive licensee by attracting Internet traffic to Respondent's website and by intentionally creating actual confusion with Complainant's marks. Given that the <tomsshoessalemart.info> domain name consists of the entirety of Complainant's federally protected mark (and comprises the dominant portion of Complainant's exclusive licensee's business name), provides further evidence of Respondent's bad faith intent.

 

Additionally, since Respondent is offering and advertising for precisely the same kind of goods at its<tomsshoessalemart.info> website as Complainant's exclusive licensee offers under Complainant's federally protected TOMS marks, it is clear that Respondent is attempting to divert business and customers from Complainant's exclusive licensee to Respondent's website. As such, customers who are already aware of Complainant's trademarks and Complainant's exclusive licensee's business could inadvertently end up (and likely have) at Respondent's Web site by typing in the <tomsshoessalemart.info> domain name or by typing "TOMS" or " TOMSSHOESSALEMART" into a search engine and thereafter being mistakenly directed to Respondent's website. Seeing precisely the same type of goods being offered at that site, and in fact counterfeit versions of Complainant's licensee's own goods, such customers, already seeking shoes, certainly would be confused as to the source of those goods.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns trademark registrations for its TOMS mark with the USPTO.

 

Respondent registered the at-issue domain name after Complainant acquired rights in the TOMS mark.

 

Respondent is not authorized to use Complainant’s trademark in any capacity.

 

Respondent operates a website addressed by the <tomsshoessalemart.info> domain name that offers shoes for sale that directly compete with the shoes offered for sale by Complainant’s exclusive licensee.  The shoes appear to be counterfeits of those offered through Complainant. The website may also be being used to capture proprietary financial information for illicit purposes. 

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered and is being used in bad faith.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Identical and/or Confusingly Similar

Respondent’s at-issue domain name is confusingly similar to a mark in which Complainant has rights.

 

Complainant demonstrates it has rights in a mark under Policy ¶ 4(a)(i) by showing it registered its TOMS trademark with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).

 

Respondent’s <tomsshoessalemart.info> domain name is confusingly similar to Complainant’s TOMS mark within the meaning of Policy ¶ 4(a)(i). The <tomsshoessalemart.info>  domain name incorporates Complainant’s TOMS mark in its entirety, simply adding the descriptive term “shoessalesmart,” and the generic top-level domain, “.info.” These differences do nothing to distinguish the at-issue domain name from the TOMS mark. In fact the use of the term “shoessalemart” in the domain name, a term which is suggestive of Complainant’s licensed products, adds to any confusion. See Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”).

 

Rights or Legitimate Interests

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.

 

Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in respect of the at-issue domain name, Complainant’s prima facie showing acts conclusively.

 

Respondent has never been commonly known as <tomsshoessalemart.info>. WHOIS information for the <tomsshoessalemart.info> domain name lists the domain name’s registrant as “afang hu / afang.” Furthermore, the record before the Panel contains no evidence that might otherwise tend to prove that Respondent is nevertheless commonly known by the at-issue domain name despite the contrary WHOIS information. The Panel therefore concludes that Respondent is not commonly known by the <tomsshoessalemart.info> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Respondent uses the at-issue domain name to address a website that promotes the sale of counterfeit products.  Using the confusingly similar domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate non-commercial or fair use of the at-issue domain name under Policy ¶ 4(c)(iii). See Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors). Respondent also may be using the domain name to address a website that fraudulently obtains proprietary financial information from its visitors. Using the domain name for such “phishing” activities further shows that Respondent’s use of the domain name is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”)

 

Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).

 

Registration and Use in Bad Faith

The at‑issue domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) bad faith circumstances are present and there is non-Policy ¶4(b) evidence which also shows that Respondent has acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

 

Respondent registered and uses the confusingly similar <tomsshoessalemart.info> domain name to divert Internet users looking for Complainant’s authorized web presence to Respondent’s website where Respondent offers counterfeit products for sale. These circumstances demonstrate that Respondent registered and is using the at-issue domain name in bad faith pursuant to Policy ¶4(b)(iv).

 

Additionally, if one intended use of the at-issue website is phishing for proprietary financial information, such activity in and of itself indicates that the at-issue domain name was registered and used in bad faith. See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (concluding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use).

 

Finally, Respondent had actual knowledge of Complainant’s rights in the TOMS mark when it registered the <tomsshoessalemart.info> domain name. Respondent’s prior knowledge of the TOMS mark is inferred from the notoriety of Complainant’s mark, the similarly between the at-issue domain name and Complainant’s mark as well as from Respondent’s marketing of products on the <tomsshoessalemart.info> website that are counterfeit. Registering and using an at-issue domain name with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <tomsshoessalemart.info> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Paul M. DeCicco, Panelist

Dated:  April 8, 2013

 

 

 

 

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